Patent Applications – What You Should Know About “First-To-File”

Ideas should belong to inventors.Until March 2013, United States Patent Law protected inventors through the “first to invent” rule. Under the “first to invent” rule, when two or more inventors filed a patent application for the same invention, the patent office would award the patent to the inventor who was first to conceive and diligently reduce the invention to practice, even if the first inventor was not the first to file a patent application.

The “first to invent” rule reflected a gut-level understanding that whoever came up with an idea first should own that idea. This is why the United States followed the “first to invent” rule, until March 2013.

In March of 2013, under the “America Invents Act” (AIA), the United States adopted the “First-To-File” rule. Under the new “First-To-File” rule, whoever files a patent application on an invention owns the rights to that invention, even if someone else came up with the idea first.

Technically the new law still does not grant patent rights to someone who steals an idea. But under the new rule the victim of idea-theft would have a difficult time regaining their rights if the thief files an application before the true inventor. It is still unclear what such a victim would have to prove, but statements from the Patent ats nd Trademark Office (PTO) make it fairly clear that the burden of proof will likely be unfavorable to the original inventor.

The take-away message is this: be the first to file and file often if you have multiple ideas which you would like to protect. With any invention there will be a stream of conception, changes to the original idea, and possibly several prototypes. However, under the new rule a patent application should be filed as soon as possible.

Talk to a patent attorney as soon as you have an invention that you can articulate. If your invention can be described through words and drawings, file a patent application. If you later change the design of your invention, talk to your patent attorney again. Changes to your invention may require a new patent application or may simply require additional filings associated with your first patent application. In either case, be the first to file.

Here is a summary written by the USPTO summarizing the recent changes to U.S. Patent Law:

(1) Convert the U.S. patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system;

(2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country;

(3) eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and

(4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013.

If you have questions about the whether you should file a patent application, please contact me and we can arrange for a consultation.

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